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Protecting Inventions: an overview of Patents
Protecting Inventions: an overview of Patents
Unlike copyright, where the owner's right arises automatically on creation, patents are granted following a lengthy application procedure which can take up to 4 years in the UK. Once granted, a patent gives the inventor the right to prevent anybody else from making or using the invention for a period of up to 20 years. However, in return for this monopoly right the details of the invention are published and made publicly available.
What can be protected as a patent?
Generally speaking, a patent may be obtained for any invention consisting of a product or a process of doing something. There are, however, four criteria which must be met in order to obtain a patent.
Firstly, the invention must be new. It must not have been made available to the public at any time before the date on which the patent application is filed. This also means that an invention may not be considered new where details of the invention have been disclosed by the inventor to one other person such that that person may then put the invention into practice himself. It is therefore important that, if the inventor intends to apply for a patent, the details of the invention remain confidential until the patent application is filed. However, disclosure of any information concerning an invention within the 6 months preceding the date of filing of the patent application will be disregarded where the information was gained unlawfully or in breach of confidence, or by virtue of the invention being displayed at an international exhibition.
Second, the invention must be an inventive step. This means that the invention must not be obvious to a person "skilled in the art", being a person with “practical knowledge and experience of the kind of work in which the invention was intended to be used”1. Whether or not an invention is obvious is assessed subjectively, and it is this criterion which is most often used by third parties to attack the validity of a patent. Recent case law includes patents for a method of implanting a replacement heart valve2, which was not considered obvious, and a drug composition intended to prevent heart attacks3. The latter was considered obvious on the basis that it was an obvious step to combine a known drug with a known formulation to enable sustained release of the drug in the patient.
Third, the invention must be capable of industrial application. In other words, there must be a practical use for the invention (in any kind of industry). This criterion ensures that patents are not granted for something which has no commercial use or value.
The fourth requirement is that the invention must not fall within a list of items which are specifically excluded from patent protection. These categories of invention are not considered to be inventions for the purpose of patents on the basis that they are not capable of industrial application. These include: discoveries and scientific theories, mathematical methods, aesthetic creations, and computer programs. Other excluded inventions include surgical, therapeutic or diagnostic techniques carried out on the human or animal body, and inventions which, if exploited, would be generally expected to encourage offensive, immoral or anti-social behaviour.
Who can apply for a patent?
Primarily, only the inventor (or his successor in title) may apply for a patent. However, there are specific rules which deal with inventions created in the course of employment, on commission or created jointly with another person. Where an invention is the result of an employee's normal duties, or specifically assigned duties, the employer is considered to be the owner of the invention and therefore entitled to apply for a patent.
In the case of commissioned work, the inventor retains ownership of the invention unless otherwise agreed with the commissioning party. The commissioning party is not entitled to apply for a patent. Where an invention is the work of two or more inventors, they are jointly entitled to apply for a patent. Furthermore, no joint inventor may licence or assign a patent without the consent of the other inventor(s), although each inventor may use or exploit the invention alone and without the consent of the other(s).
The application
The timing of a patent application is very important. Given the restrictions on applying for a patent, the inventor must decide at an early stage whether he wishes to protect his invention as a patent, and certainly before any disclosure of the invention is made. Consideration must also be given to the potential market for the invention and the risk of a competitor coming up with a similar invention and filing their application first and thus preventing an inventor obtaining a patent for his invention.
The invention must be sufficiently well developed at the point of filing the application to enable the inventor to include a specification which clearly describes the invention, and its purpose, so that a person skilled in the art may recreate it. The specification must also set out “claims” for the invention, which detail the scope of protection sought for the invention. The inventor must then file, if it was not included in the original application, a more detailed specification with working examples of the patent within a year of filing the application.
There are a number of steps which must be taken after the application has been filed with the Intellectual Property Office, some of which must be specifically requested (and paid for) at certain points in the process. Once granted, a patent lasts for up to a maximum of 20 years subject to the payment of annual renewal fees.
A timeline is set out below which identifies the key stages of a patent application through to the grant:
Timing |
Task |
Fees |
|---|
Filing date |
Application filed |
£30 |
Within 12 months of filing date |
Proof of entitlement filed |
No fee |
Fuller application |
No fee |
Fuller application filed in other countries in which protection is required. Fees apply for each application made. |
Various |
Request for preliminary examination and search of prior art and other applications |
From £80 |
Within 18 months of filing date |
Publication of fuller application in Patents Journal, with prior art search results |
No fee |
The application cannot be withdrawn after it has been published |
n/a |
After publication |
Request for substantive examination |
£70 |
Third partied invited to submit observations on the application and advise on prior art not identified in the IPO's search |
n/a |
IPO considers new citations of prior art |
n/a |
2 - 4 years from filing |
Patent granted |
No fee |
NB: Once granted the validity of a patent is still open to challenge |
n/a |
4 to 20 years from filing the fuller application |
Renewal fees payable annually from the 4th anniversary of filing the fuller application. The renewal fee increases annually. |
£50 to £400 |
Protecting patents internationally
As a general rule, an inventor must file his application for a patent in the country in which the inventor works. During the 12 months following the filing of the original application, the inventor can apply to register the patent in any other countries in which he requires protection. There are a number of options for making international applications, depending on the number and location of countries in which protection is required. Briefly:
If an inventor only requires protection in a few additional countries, a national application may be filed with the appropriate authority in each country. Fees are payable in each country in which protection is sought.
A regional application may be filed, such as a European application to obtain protection in the 35 contracting states of the European Patent Treaty. The cost of applying for a European Patent is up to approximately €3,500.00. Annual renewal fees are payable from the third anniversary of the grant of the patent. Other regional applications include Africa and Eurasia.
Rather than filing national or regional applications, an international application may be filed. This allows the inventor to file one application which will then be filed in each country specified on the application. The cost of applying for an International Patent is up to approximately €7,000.00. After international searches have been undertaken, the national authorities take control of the application in each country and the fees of each country to pursue the application through to the grant of the patent (and beyond in terms of renewal fees) will be payable.
Benefits of applying for a patent
In addition to the monopoly right obtained by the grant of a patent, there are a number of additional benefits to be derived from the moment the application is filed. Once an application has been filed products consisting of or incorporating an invention which are sold or used commercially may be marked "patent pending". This puts users of the invention on notice that a patent is being sought to protect the invention, and may be useful in deterring potential infringers. It is an offence to mark any product as "patent pending" where no application has been filed.
A patent application may be used to deter competitors from copying the invention, and may in fact encourage competition by forcing competitors to develop new innovations. On a more commercial level, the monopoly right obtained with the granting of a patent means that the inventor may license the invention for a higher income than would otherwise be available if the invention was not protected as a patent.
Alternative means of protecting inventions
Inventions may, as an alternative to patent protection, be protected as trade secrets under the laws on confidential information. The decision to use this means of protection requires will very much depend on the nature of the patent and its intended use. Once an invention is commercialised, it will no longer be a secret. The invention will not then benefit from protection as a trade secret and at that stage the opportunity to apply for a patent will have been lost.
Note: this article is intended to be an overview of patents only, in the United Kingdom, and is not a definitive guide on the law relating to patents and the procedure for applying for protection.
1Catnic v Hill & Smith [1982] R.P.C. 183 at 242-243
2Corevalve v Edwards Lifesciences [2009] EWHC 6 (Pat)
3Actavis v Novartis [2009] EWHC 41 (Ch)
For further details please email jenna.bruce@howespercival.com or matthew.talbot@howespercival.com.